USPTO Patents Application 10003471

08/06/2087 18:05 15123061963

SCHEINBERG & GRINER

PAGE 12/15

Application No. 10/003,471
Amendment Dated: August 0, 2007
Response to Office Action of April 6, 2007
A.ttomey Docket No.: C063

Remarks/Arguments:
Specification

The Examiner notes that under 37 C.R R. 1 .72, the title of the invention should be
descriptive, brief and technically accurate. The Examiner does not indicate whether, or in what
way, the present title does not meet those requirements. It seems to applicants that the title is
descriptive, brief and Lcchnically accurate, and applicants request clarification from the Examiner
if he considers that the title needs to be changed.

Claims

Claims 1-18 are pending in the application. Claims 1, 5, 13, 14, and 15 are in
independent form.

General C nmmpnt*

The Examiner states that with regard to claims 1 and 6, it is unclear how confirming by e-
mail is being performed. Claim 1 and 6 are not rejected or objected to. Applicants submit that
they are not required to limit the claim to any particular method of performing the confirmation.

Objections

Claim 13 is objected to as an improper dependent claim. Claim 13 has been amended to
be independent.

Claim Rejections Under 35 ILS-C § 112

Claim 10 is being rejected under 35 U.S.C. 1 12, second paragraph as being indefinite for
using the auxiliary verb "can." Amended claim 10 does not use the auxiliary verb u can."

Claim Refecti ons Under 35 U.S.C 8 103(a)

Claims 1-13 are being rejected under 35 U.S.C. 103(a) as being unpatentable over U.S.
Patent No. 7,062,462 to Ireland et al. ("Ireland").

Ireland teaches a method and apparatus that enables a user to receive a financial aid

-6~

PAGE 12/15 * RCVDAT 8/612007 11:06:05 PM [Eastern Daylight Time] 1 SVR:USPT0-EFXRF-5/11 * DNlS:2738300 1 CSID:15123061963" DURATION (mm-ss):0442

08/06/2097 10:05 15123061963

SCHEINBERG & GRINER

PAGE 13/15

Application No. 10/003,471
Amendment Dated: August 6, 2007
Response to Office Action of April 6, 2007
Attorney Docket No.: C063

package from an educational institution. Col. 1, lines 15-21. Ireland dues not address bow the
financial aid is awarded.

Ireland, the primary reference, does not teach any of the dements of claim h Ireland
does not teach '"providing a form for use in nominating a scholarship recipient nominee." Ireland
does not teach dominating a scholarship recipient nominee-" Ireland does not teach "contacting
the nominee to confirm that the nominee accepts the nomination." Ireland does not teach
"providing a form for voting for a nominee." Ireland does not teach posting the form to vote for
a nominee." Ireland does not teach "confirming the vote using electronic mail." Ireland does not
teach "awarding a scholarship to the nominee satisfying a voting criterion."

The Examiner states, however, that receiving a nomination on behalf of any other person
is old and well known. Applicants are not claiming "receiving a nomination on behalf of any
other person." Applicants in claim 5 are claming a method of awarding a scholarship, including
specific steps of "awarding the scholarship to the nominee satisfying a voting criterion,"
Applicants in claim 1 are claiming a method of increasing traffic on a web site.

Scholarships have traditionally been awarded based upon need or merit after completion
of complex financial aid forms- Need-based scholarships allow individuals to attend college who
would not otherwise have the financial ability. Merit based scholarships attract top students that
will bring prestige to the college. The Examiner has not cited any reference showing a reason
why a skilled person would deviate from the long-established bases for awarding scholarships.
The Examiner has provided no reference in which scholarships are awarded based on internet
nominations and votes. Applicants have altered the time-honored methods of awarding
scholarships, in part, as a method of increasing internet traffic at college related site. Applicants
submit that this method is novel and was not obvious as of applicants* February 2001 filing date.

The Examiner cites the process by which elected officials are elected in the USA.
However, elected officials in the USA are, to applicants knowledge, not nominated over the web
and to applicants knowledge, people do not vote over the web for elected officials. The
Examiner cites multiple awards, such as the Tony award, Grammy award, Nobel Prize, NBA

-7-

PAGE 13/15 * RCVD AT 8/6/2007 11:06:05 PM [Eastern Daylight Time] * SVR;USPT0-EFXRF-5/1 1 * DNIS:2738300 * CSID:15123061963 * DURATION (mm-ss):0442

,08/06/2007 10:05 15123061963

SCHEINBERG & GRINER

PAGE

14/15

Application No, 10/003,471
Amendment Dated: August 6, 2007
Response to Office Action of April 6, 2007
Attorney Docket No.: C063

MVP, Teacher of the Year awards, etc. The Examiner provides no evidence to show that any of
these awards used internet nomination and voting before applicants' filing date. Even if the
awards had used Internet nomination and voting, skilled persons had no reason to apply Internet
nomination and voting to the field of scholarships.

MPEP 2144.03A states: "It is never appropriate to rely solely on "common knowledge"
in the art without evidentiary support in the record, as the principal evidence upon which a
rejection was based." Applicants submit that the primary reference, Ireland, teaches none of the
claim elements of the independent claims, and the Examiner is improperly relying on "common
knowledge" to supply the entire substance of the rejection.

The Examiner states on page 8 that 'local, State-wide, primary and general elections can
be conducted over the Internet, wherein a voter, using a computer, can vote or nominate a
candidate or a second person for a post or a position in the privacy of his own home." It is not
clear to applicants that voters were nominating and voting in democratic elections before
applicants' filing date.

Applicants respectfully traverse the "official notice." MPEP 2144,03A states: "It would
Sot be appropriate for the examiner to take official notice of facts without citing a prior art
reference where the facts asserted to be well known are not capable of instant and unquestionable
demonstration as being well-known." To adequately traverse such a finding, an applicant must
specifically point out the supposed errors in the examiner's action, which would include stating
why the noticed fact is not considered to be common knowledge or well-known in the art As
explained above, in the rapidly changing field of ihc compute**, what appears 4t well known"
today may not have been obvious six years ago. Applicants request that the Examiner provide
evidence of the noticed facts, as required by MPEP 2144. 03C, which states: "If applicant
adequately traverses ihe examiner's assertion of official notice, Hie exaaxiaej must provide
documentary evidence in the next Office action if the rejection is to be maintained." The
Examiner states that "it is well established in the industry, for example, that the National
Basketball Association (NBA) received nominations, via a form posted on its site, fbr players for
different posts who will compose the All-Star Western and Eastern squads . . ." Applicants do

-8-

PAGE 14/15 * RCVD AT 8/6/2007 11:06:05 PM [Eastern Daylight Time] * SVR:USPT0-EFXRF-5/11 * DNIS:2738300 * CSID:15123061963 * DURATION (mm-ss):0442

08/0672007 10:05 15123061963

SCHEINBERG & GRINER

PAGE 15/15

Application No. 10/003,471
Amendment Dated: August 6, 2007
Response to Office Action of April 6 ? 2007
Attorney Docket No.: C063

not known that such voting occurred before applicants filing dale, aud icspwlfully requests the
Examiner provide evidence if he chooses to maintain the rejection.

Claim 1 6 states that the nominations are received from anyone having internet access.
There is no evidence that awards, such as the Nobel Prize, the Grammy awards and the Tony
awards, allow anyone having internet access to nominate a candidate. Similarly, there is no
evidence that in a democratic election, a candidate can be nominated by anyone having internet
access by posting a web form. Claim 1 7 states that any college student or prospective college
student can be nominated. There is no evidence that the awards and prizes described above
allow such open nomination via the Internet.

Applicants do not claim to have invented voting; applicants have invented methods of
awarding scholarships and of increasing traffic on a college-related web site that include voting
as an element of the claims.

Applicants submit that all claims are now allowable and respectfully requests
reconsideration and allowance of the application.

Respectfully submitted,

Dated: August 6, 2007

Michael O. Scheinberg
Patent Attorney

Pat. Reg. No, 36,919
P.O. Box 164140

Austin, Texas 78716-4140
Telephone: (512) 637-0800
Facsimile: (512) 306-1963

PAGE 15/15 * RCVD AT 8/612007 11:06:05 PNI [Eastern Daylight Time] * SVR:USPT0-EFXRF-5/11 * DNIS:2738300 * CSID:15123061963 * DURATION (mm-ss):0442